Gradiente won the trademark but didn't make use of it until late 2012.

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Apple is fighting back against its Brazilian trademark loss over the "iphone" name. The company filed an appeal following Wednesday's decision by Brazil's copyright office, the National Institute of Industrial Property (INPI), which awarded the "iphone" trademark to a company named Gradiente Eletronica SA. As noted by Reuters, Gradiente now has 60 days to prove that it has been using the trademark; otherwise it may be handed back to Apple.

Gradiente is an electronics maker that filed for the iPhone trademark in Brazil in 2000 but did not use it for years. The company's trademark application was approved in 2008, a year after Apple launched its iPhone—Gradiente restructured and formed IGB Electronica SA, which eventually launched its own line of "iPhones" in December of 2012.

INPI handed Gradiente a win in the trademark dispute earlier this week, undoubtedly due to its early filing on the iPhone trademark. But Apple wants it back and has challenged the decision. Now, Gradiente has to prove that it actually did make use of the trademark between 2008 and 2013 or it risks losing "iphone" back to Apple.

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Jacqui Cheng
Jacqui is an Editor at Large at Ars Technica, where she has spent the last eight years writing about Apple culture, gadgets, social networking, privacy, and more. Emailjacqui@arstechnica.com//Twitter@eJacqui

There was somebody yesterday complaining about sensational, CNET like headlines on ARS. While I don't think it's that bad, Brazil didn't "decide" the iphone trademark doesn’t belong to Apple, nor did Gradiente "win" it. They just have two months to prove that they were using it, otherwise it simply reverts to apple.

All of this is actually in the article, contradicting the headline. Maybe a bit more care could be taken writing them.

So if I register a trademark, but encounter some delays getting my product out the door, and then Apple or Cisco or whoever releases a product infringing on my trademark... because I haven't used it yet (due to the aforementioned production delays)... I'm S.O.L.?

So if I register a trademark, but encounter some delays getting my product out the door, and then Apple or Cisco or whoever releases a product infringing on my trademark... because I haven't used it yet (due to the aforementioned production delays)... I'm S.O.L.?

Good question. Maybe you'd have to prove active development or something?

So if I register a trademark, but encounter some delays getting my product out the door, and then Apple or Cisco or whoever releases a product infringing on my trademark... because I haven't used it yet (due to the aforementioned production delays)... I'm S.O.L.?

Yes, it's different from say a business name which is registered. Trademarks can't be granted in advance.

So if I register a trademark, but encounter some delays getting my product out the door, and then Apple or Cisco or whoever releases a product infringing on my trademark... because I haven't used it yet (due to the aforementioned production delays)... I'm S.O.L.?

Yes, it's different from say a business name which is registered. Trademarks can't be granted in advance.

It seems they can, and you have a 5-year window in which you have to make use of it (3 years in some jurisdictions).

This isn't even a first. If I remember correctly, Apple bought the iPhone trademark from Cisco in the US, and settled with another company in China. Both of them had prior rights to the trademark in those territories. If Gradiente did everything correctly, they own the trademark in Brazil and Apple has to live with it or buy it off them.

I don't think Apple will win this one unless they settle and pay for the name. Unlike the other cyber/copyright squatters the Brazil company actually made a phone in December of 2012 and called it the iPhone. So yeah, Apple has no ammo to bully them out of the name.

I don't think Apple will win this one unless they settle and pay for the name. Unlike the other cyber/copyright squatters the Brazil company actually made a phone in December of 2012 and called it the iPhone. So yeah, Apple has no ammo to bully them out of the name.

I don't think Apple will win this one unless they settle and pay for the name. Unlike the other cyber/copyright squatters the Brazil company actually made a phone in December of 2012 and called it the iPhone. So yeah, Apple has no ammo to bully them out of the name.

Except probably not, because of the timing.

If someone else is already using the name, even if they haven't trademarked it, YOU can't trademark it out from under them - that's not how trademark law works.

You must be using the term exclusively to get a trademark.

EDIT: The above image is interesting. Is it real? If so that would be bad news for Apple. Kind of. It depends on whether they kept using it.

I don't think Apple will win this one unless they settle and pay for the name. Unlike the other cyber/copyright squatters the Brazil company actually made a phone in December of 2012 and called it the iPhone. So yeah, Apple has no ammo to bully them out of the name.

Except probably not, because of the timing.

If someone else is already using the name, even if they haven't trademarked it, YOU can't trademark it out from under them - that's not how trademark law works.

You must be using the term exclusively to get a trademark.

EDIT: The above image is interesting. Is it real? If so that would be bad news for Apple. Kind of. It depends on whether they kept using it.

this is so funnyeither apple will bribe the proper people in brazilan government to 'win' this one or they will pay up to gradient, or whatever the company name iseither way this is being played to make apple enrich some very special interest in brazil. expect this to happen in other countries very soon

The bigger question is where the hell was this troll when Apple and Cisco were hammering out the iPhone" Trademark in 2006 and 2007 ??

This is a clear case of "lets sit around - watch the fireworks play out - then watch to see the winner and how well they do or bust - and if they do good troll the shit out of them after the fact a decade later".

Simple solution - just don't sell iPhones in Brazil. So sorry to the Brazillians - you'll just have to get bootleg iPhones or crappy non-existent "iphones" form the lcoal trademark squatter.

ALSO of note -- Gradiente is NOT using the term as the name of an actual product - but as a subset of the name within a title description:

They are not showcasing or highlighting the use of "iphone" in any capacity. I had to search for it to even find it. There was nothing blatent or in-your-face about the use of the term on their Website.

Additionally Apple should fire back about how similar the product looks physically to past iPhone models - like it just won against Samsung. The fron face looks real similar to teh 2G - 3G and 3GS - just sayin.

I don't think Apple will win this one unless they settle and pay for the name. Unlike the other cyber/copyright squatters the Brazil company actually made a phone in December of 2012 and called it the iPhone. So yeah, Apple has no ammo to bully them out of the name.

I don't understand the "return to Apple" part. It sounds like Apple never had the trademark in Brazil. How does that tie in?

If you use a trademark in a country, even if you haven't registered it as a trademark, and someone else attempts to jump in on top of it, they can't; either the mark will revert to the person who originally used it, or it will be genericized (if there is sufficient evidence to suggest that the term is a general term for something).

Nope, you have to use a Trademark for you to be able to hold on to it. Doesn't sound like Gradiente have been using it, so Apple are probably going to, rightly for once, get this.

Are you referring to Brazilian law or do you think that US law applies in Brazil?

well judging by what the new court case is about it, last line in the article, the law seems to be similar to US.

In Brazil, trademarks are awarded based on first registration, not first use. First use is the norm in the US, Australia and other jurisdictions, but that is not the case in Brazil. The registration can be challenged if the TM is not used by the registered owner, or if the case/brand is "big" enough (e.g. a company like Coca-Cola or McDonalds). But such is the law in Brazil that first-registration takes precedence over first-use for the purpose of initial ownership of a trade mark.

I don't understand the "return to Apple" part. It sounds like Apple never had the trademark in Brazil. How does that tie in?

If you use a trademark in a country, even if you haven't registered it as a trademark, and someone else attempts to jump in on top of it, they can't; either the mark will revert to the person who originally used it, or it will be genericized (if there is sufficient evidence to suggest that the term is a general term for something).

In many jurisdictions this is the case, but not in Brazil (see above).

The bigger question is where the hell was this troll when Apple and Cisco were hammering out the iPhone" Trademark in 2006 and 2007 ??

This is a clear case of "lets sit around - watch the fireworks play out - then watch to see the winner and how well they do or bust - and if they do good troll the shit out of them after the fact a decade later".

Simple solution - just don't sell iPhones in Brazil. So sorry to the Brazillians - you'll just have to get bootleg iPhones or crappy non-existent "iphones" form the lcoal trademark squatter.

ALSO of note -- Gradiente is NOT using the term as the name of an actual product - but as a subset of the name within a title description:

They are not showcasing or highlighting the use of "iphone" in any capacity. I had to search for it to even find it. There was nothing blatent or in-your-face about the use of the term on their Website.

Additionally Apple should fire back about how similar the product looks physically to past iPhone models - like it just won against Samsung. The fron face looks real similar to teh 2G - 3G and 3GS - just sayin.

Doesn't matter if Gradiente is not using it as the name of a product. Trademarks can be used in many other ways. Also, Apple could make the "rectangle with rounded corners" argument if they want, but I don't think their trade dress argument will apply as it did with Samsung as the Gradiente "iphone" lacks the single hardware Home button; has that silver band on the back; and (probably) has different packaging. I suppose Apple could have a go at it though - but that's not an argument about the "iphone" trademark.

The bigger question is where the hell was this troll when Apple and Cisco were hammering out the iPhone" Trademark in 2006 and 2007 ??

This is a clear case of "lets sit around - watch the fireworks play out - then watch to see the winner and how well they do or bust - and if they do good troll the shit out of them after the fact a decade later".

The company went bankruptcy on 2006 and it did freeze all manufacturing until late 2009.

fferitt25 wrote:

Simple solution - just don't sell iPhones in Brazil. So sorry to the Brazillians - you'll just have to get bootleg iPhones or crappy non-existent "iphones" form the lcoal trademark squatter.

It`s not that simple, Foxconn has 2 manufacture plants in Brazil that make iphones and ipads to America (the continent, Not only US), The country is also on the top 10 biggest market of smartphone in the world and Apple only has 5% of the market, considering that each iphone is sold for at least USD$1,000.00 I doubt that Apple will stop selling it.

fferitt25 wrote:

ALSO of note -- Gradiente is NOT using the term as the name of an actual product - but as a subset of the name within a title description:

They are not showcasing or highlighting the use of "iphone" in any capacity. I had to search for it to even find it. There was nothing blatent or in-your-face about the use of the term on their Website.

partially using a trademark or any variation that looks alike in shape or sound alike is considered an infringement according to Brazilian law and could easily result in fine or even a criminal charges if Gradiente proves that Apple used the name even knowing that it was trademarked. Criminal charges is unlikely to happen but who knows.

fferitt25 wrote:

Additionally Apple should fire back about how similar the product looks physically to past iPhone models - like it just won against Samsung. The fron face looks real similar to teh 2G - 3G and 3GS - just sayin.

Such a patent cannot be granted according to Brazilian law, just because it`s too generic and it can reassemble any phone.

Wouldn't have been correct if the judge had asked Gradiente proof of using the trademark _before_ writing the sentence? Is this another of those tricks to make lawyers earn something?

it wasn`t a judge decision, the decision was made by the patent and trademark office.

When a trademark is registered in Brazil any company has the right to fill in a complaint within the period of 90 days after the registration submit. than it`s up to the trademark office to decide if it`s a valid complaint or not.

That Brazilian company may not have used the "iphone" on a product for years, but wouldn't Apple unleash their lawyers if someone came out with a new product called Newton, or Lisa, or Cube? Please... you had that coming, Apple.

That Brazilian company may not have used the "iphone" on a product for years, but wouldn't Apple unleash their lawyers if someone came out with a new product called Newton, or Lisa, or Cube? Please... you had that coming, Apple.

This may simply be a case of company discovering they had the trademark and using it to try to get Apple to buy the trademark off them? At this point, I believe that if anyone bought an iPhone they expect it to be an Apple device, so the company can't realistically believe they will make a good market for themselves with that name.

This tactic also allows Gradiente to win while still losing. Basically the news will announce that Apple either settled or won and in the meantime we now all know about the phone and what the new name will end up being. Marketing by means of the press talking about a legal proceeding. It wouldn't be the first time and it won't be the last.